pdf - Intellectual Property Office

 The Chocolate Hills of Bohol The Chocolate Hills is a famous tourist attraction in Bohol and has been declared as the Philippines’ third National Heritage and was proposed to be included in the UNESCO World Heritage List. These unique mound-­‐shaped hills have a generally conical and symmetrical shape. This tourist attraction was named as such because during the dry season, it resembles endless rows of the branded confection “chocolate kisses”. Photo by: Mr. Rodel S. Espiritu, IPOPHL T C
ABLE OF ONTENTS MESSAGE FROM THE IPOPHL DIRECTOR GENERAL EXECUTIVE SUMMARY THE IPOPHL VISION, MISSION, AND STRATEGIC GOALS THE IPOPHL ORGANIZATION • ORGANIZATIONAL CHART • THE IPOPHL MANAGEMENT • THE PEOPLE OF IPOPHL • THE INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES SG1 DELIVERING QUALITY AND TIMELY PATENTS, TRADEMARKS, AND OTHER REGISTRATIONS • IP FILINGS, GRANTS, AND REGISTRATIONS • THE INTEGRATED INTELLECTUAL PROPERTY MANAGEMENT SYSTEM • ASEAN PATENT SEARCH EXAMINATION COOPERATION SG2 PROVIDE SPEEDY, QUALITY, AND EFFECTIVE LEGAL REMEDIES AND BE THE FORUM OF CHOICE FOR IP DISPUTE RESOLUTION • INTER PARTES AND INTELLECTUAL PROPERTY VIOLATION CASES • ALTERNATIVE DISPUTE RESOLUTION • ANTI-­‐COUNTERFEITING AND PIRACY INITIATIVES • 2012-­‐2016 ACTION PLAN ON IPR PROTECTION AND ENFORCEMENT SG3 PROVIDE IP-­‐RELATED BUSINESS DEVELOPMENT AND TECHNOLOGY TRANSFER SERVICES • BUILDING THE INNOVATION ECOSYSTEM • IP MANAGEMENT AND TECHNOLOGY COMMERCIALIZATION • PROTECTING TK, TCE, AND GR SG4 INSTITUTIONALIZE COPYRIGHT SUPPORT SERVICES • COPYRIGHT REGISTRATION • COPYRIGHT AWARENESS ACTIVITIES SG5 INCREASE THE LEVEL OF APPRECIATION OF, RESPECT FOR, AND UTILIZATION OF IP ST
• 1 PHILIPPINE IP SUMMIT • IP IN THE REGIONS SG6 LEAD THE ADVOCACY FOR LEGAL AND POLICY INFRASTRUCTURES TO ADDRESS EMERGING NATIONAL AND GLOBAL DEMANDS OF THE IP SYSTEM • AMENDMENTS TO THE IRR OF INTER PARTES PROCEEDINGS • ACCESSION TO THE MADRID PROTOCOL • COPYRIGHT BILL • INTERNATIONAL RELATIONS • OTHER DEVELOPMENTS SG7 DEVELOP AND MAINTAIN A HIGHLY-­‐MOTIVATED, COMPETENT, AND COHESIVE WORKFORCE COMMITTED TO SERVE WITH PROFESSIONALISM, TRANSPARENCY, AND INTEGRITY • ENHANCING IP LEGAL EDUCATION, KNOWLEDGE, AND PRACTICE • CUSTOMER SERVICE MECHANISM SG8 PROVIDE A CONDUCIVE WORK ENVIRONMENT THAT SUPPORTS PROFESSIONAL GROWTH AND PROMOTES WORK-­‐LIFE BALANCE • THE INTELLECTUAL PROPERTY CENTER • ENSURING WORK-­‐LIFE BALANCE ANNEXES • IP STATISTICS • IPOPHL EVENTS AND ACTIVITIES 2 4 9 10 10 11 14 15 18 18 22 23 24 24 25 25 29 30 30 32 32 34 34 34 36 36 38 40 40 40 41 42 42 43 43 44 45 45 45 47 51 MESSAGE FROM THE D G
IRECTOR
ENERAL
Wow, it’s been a year! 2011 was really a hectic year for the IPOPHL. We tried to reach all the goals we set out at the beginning of the year, but due to some external factors, we just couldn’t reach 100%. Even so, I believe our 85% batting average is quite a feat in itself. 2011 was a frenzied year for the men and women of IPOPHL, as we tried to be more proactive and rally all stakeholders to improve the protection of intellectual property rights in the country. We have been working on a lot of different projects, including the first ever Anti-­‐Counterfeiting and Piracy Summit, which brought together the different agencies, organizations, practitioners and rightholders under one roof in order to brainstorm on how to improve the enforcement of IPRs. We have also been busy coming up with the 2012-­‐2016 Philippine Action Plan on Intellectual Property Rights Protection and Enforcement, which will serve as our road map for the next few years. Aside from these activities, we are at an all-­‐time high in terms of the amount of seized counterfeit and pirated goods by the NCIPR, a whopping Php 6.9 billion as of December 15! We have also been taking the lead in a lot of international initiatives, putting the IPOPHL front and center when it comes to IPR protection in Asia. We’re now pacing fast for the accession to the Madrid Protocol, and for this purpose, we held a formal round of consultations for trademark stakeholders before submitting our formal recommendation for accession. Just last year, we reviewed the alternative dispute resolution (ADR) mechanism and decided to establish a Mediation and Arbitration Office in IPOPHL. Immediately, new rules on mediation were crafted and went into effect at the start of this year. As a result, the referral of pending cases to mediation became mandatory a Settlement Period was declared to “pump prime” mediation cases in IP. On the other hand, the Arbitration Rules were crafted consistent with WIPO Arbitration Rules and training of almost a hundred arbitrators ensued in partnership with the Philippine Dispute Resolution Center (PDRCI). Thus, I am proud to say that we are one of few IP offices in the world to have an institutionalized ADR mechanism offering both mediation and arbitration – and the only one in the Asia Pacific region! Of course, we’ve also been growing and expanding our delivery platforms to reach more stakeholders. Most notable is the fact that we have established a national network of IP offices within schools and universities. We called them Innovation and Technology Support Offices (ITSOs) and we did it through a franchise system where IPOPHL is the franchisor and the host institutions are franchisees. From an initial target of five (5) ITSOs, we ended the year with almost thirty (30) ITSOs in schools with an addition of support institutions joining the network, namely in the Department of Trade and Industry, Department of Science and Technology and a foundation for technology incubation. At the same time, over ten (10) universities have lined up to join the next batch of training to join ITSO in the next year. We’ve also been widening our reach by opening three (3) more IP Satellite Offices (IPSOs) bringing the total number of IPSOs to ten (10). Thus, we are now in Cagayan de Oro, Tuguegarao, and Tacloban. As such, anyone can now file trademark, patent, utility model and industrial design applications in ten cities outside Metro Manila. Additionally, our IPSOs have started accepting copyright works for deposit with the National Library. In a Memorandum entered into with the National Library, IPOPHL is now a deputized institution for said purpose. I am happy to note that the inaugural works we accepted were the paintings of the late President Corazon Aquino. 2011 was also the year that gave birth to the country’s first Masters Degree of Laws in Intellectual Property (LL.M-­‐IP) Program – a join program with the Ateneo de Manila Law School (ALS). The first batch of candidates for LL.M-­‐IP included three (3) IPOPHL lawyers from the Bureau of Legal Affairs while IPOPHL committed to send more of its lawyers to the program in the next five (5) years. As we wanted to release this Annual Report during the first week of January 2012, we decided to have all our data from January 1 to December 15, 2011. We believe that the data from the remaining days of December 2011 will not significantly change the statistics included in this report. In any case, please do watch out for the final data and statistics on our website, www.ipophil.gov.ph, or better yet come visit us at our new home in the Intellectual Property Centre at McKinley Hill, Taguig City. Still, there’s a lot to be done. For the notorious counterfeiters and pirates, I say that there shall be no rest for the infringers. The men and women of IPOPHL are committed to the enforcement of IP rights in the country, and we’ve only scratched the surface. With the recent promulgation of the Rules of Procedure for IPR cases by the Supreme Court, and the imminent passage of the Copyright Bill, we look forward to an exciting 2012 in all fronts of IP development. Let this year’s accomplishments be a declaration to the world that the IPOPHL will be unyielding and relentless in its fight against piracy and counterfeiting while continuing its efforts to demystify, democratize and development-­‐orient the IP system of the country. We shall remain steadfast in our commitment to work towards the effective use of the IP system for IP creation, protection, utilization and enforcement of IP rights as we champion the respect for IP rights not only in the country, but also in Asia and all over the world. E
XECUTIVE The Intellectual Property Office of the Philippines kicked the year off by laying out its programs, projects, and activities for 2011. It introduced its “Roadmap 2011” to its employees and to the public composed of 70 deliverables – the members of the Executive Committee pledging to finish five (5) targets each. Each employee also has his/her own deliverables supporting the targets of his/her bureau. S
UMMARY
Medium Enterprises (SMEs) and creative industries in the creation, protection, and enforcement of their intellectual property. Second, it contributes to the country’s technological development by promoting innovation through technology transfer and IP commercialization. Lastly, it supports the country’s socio-­‐cultural development by establishing programs that will protect and preserve our traditional knowledge (TK), geographic indications (GI), genetic resources (GR), and traditional cultural expressions (TCE). MAJOR EVENTS AT A GLANCE By end of the year, IPOPHL has achieved 85% of these targets. Some of the targets were deferred to 2012 as these were beyond the control of IPOPHL (i.e. laws and policies requiring approval of the House of Representatives and the Senate, setting up of units requiring manpower, etc.). The programs and projects embedded in the Roadmap support IPOPHL’s eight (8) strategic goals, its mission, and its vision. True to its mission, IPOPHL commits to contribute to the country’s economic development by supporting Small and In celebration of the Intellectual Property Week, IPOPHL conducted the “1st Philippine Anti-­‐
Counterfeiting and Piracy Summit” in partnership with different agencies and organizations. The IP Summit was graced by dignitaries such as the Honorable Jejomar C. Binay, Vice President of the Republic of the Philippines; Honorable Celso L. Lobregat, Mayor of the City of Zamboanga; and Honorable Jesse M. Robredo, Secretary of the Department of Interior and Local Government. The IP Summit was a collaboration of three events: the WIPO Regional Workshop on the Dangers of Counterfeit Goods to Public Health; INTA Anti-­‐
Counterfeiting Committee Roundtable on Combating Counterfeiting on the Internet and Landlord Liability Measures; and the IPR Business Partnership Workshop on Effective Control Measures. These were attended by a remarkable number of participants from the government, representatives of foreign states, international organizations, business groups, and IP stakeholders. Vice President Jejomar C. Binay delivered the keynote address and in his speech gave his assurance that as Vice President of the Republic of the Philippines, he will be a staunch advocate of intellectual property. The “Regional Workshop on the Dangers of Counterfeit Goods to Public Health” on 24-­‐25 October 2011 was co-­‐organized by the World Intellectual Property Organization (WIPO) and the U.S. State Department. In the workshop, the participants were given a clearer understanding of the legal framework of IP, the need to respect IP, and the grave effects of counterfeiting and piracy. The WIPO officials shared various outreach tools that have been designed to help build an IP culture among the general public and change consumer attitudes and perceptions. Three members of the National Committee on IPR (NCIPR) also presented the challenges that they face in combating counterfeiting and piracy in the country. The “INTA Anti-­‐Counterfeiting Committee Roundtable on Combating Counterfeiting on the Internet and Landlord Liability Measures”, was held on 26 October 2011. This activity was made possible in partnership with the International Trademark Association (INTA). The half-­‐day affair brought in relevant information on the anti-­‐
counterfeiting activities of INTA and increased awareness on landlord liability for IPR infringement in the Philippines. A Proposal to disrupt the illegal business of vendors who sell counterfeit goods through leased promises was also presented. Public awareness as to the increase in online counterfeit sales and how these are being addressed were also emphasized in the discussion. The roundtable was aimed at encouraging coordination between law enforcement, local government, legislators, government agencies, trademark owners and trademark law practitioners, to more effectively combat counterfeiting activities. The three-­‐day “IPR Business Partnership Workshop on Effective Control Measures” on October 26-­‐28, 2011 highlighted several activities. One of these was the signing of the Memorandum of Agreement of the National Committee on IPR (NCIPR) and the IPR Business Partnership to facilitate cooperation for the prevention and suppression of acts infringing the IPRs of members of the IPR Business Partnership. Updates on the initiatives on IP enforcement were also presented. A workshop on counterfeit identification of several popular brands and/or companies, i.e. Swiss Watch Federation, Chanel, Colgate Palmolive, Philips, Pfizer, Unilever, and Louis Vuitton, among others, was also held. Presentations on the Cooperation between Rights Holders and Enforcement Agencies, Effective Investigation and Prosecution of IPR Violations, and the role of the Bureau of Customs on Effective Border Control Measures were likewise given emphasis. The closing of the IP Summit featured the Presentation of the 2012-­‐2016 Philippine Action Plan on Intellectual Property Rights Protection and Enforcement and the recognition of the IP champions who have shown unwavering support and commitment in the protection and enforcement of IPRs. One of the major policy moves at IPOPHL is the intensifying of discussions and commencing of actions for the Philippines to join the Madrid System for the International Registration of Marks. Preparations for the accession to the Madrid Protocol have been ongoing since 2006 but finally IPOPHL has submitted its formal recommendation this year after conducting a final round of consultations with businesses and trademark lawyers in a series of fora entitled “Madrid Protocol – The Way Forward for the Philippines: Forum for Stakeholders.” Not surprisingly, the discussions resulted in several industry and business groups declaring their support for the immediate accession to the Madrid Protocol. The following came out as the most vocal endorsers for Madrid Protocol: • Philippine Chamber of Commerce and Industry (PCCI) • Federation of Filipino-­‐Chinese Chambers of Commerce and Industry, Inc. (FFCCCII) • Makati Business Club (MBC) • National Competitiveness Council (NCC) • Joint Foreign Chambers of the Philippines (JFC) STRENGTHENING IPR PROTECTION IPOPHL continues to work towards promoting the effective use of the Intellectual Property System in the country as a tool for national development. Thus, aside from conducting activities and implementing projects to communicate the importance of IP, IPOPHL also ensures protection and enforcement through its Bureau of Legal Affairs (BLA) and the NCIPR. It set up an Operations Center within its premises to accommodate reports and complaints on IPR violation from the public. In 2011, the NCIPR has seized Php 6.9 billion worth of counterfeit and pirated goods. As a move to combat counterfeiting and piracy, IPOPHL entered into an agreement with several agencies and organizations for the effective enforcement of IP. It established Memoranda of Agreement (MOA) with both the Philippine Ports Authority (PPA) and the Manila International Airport Authority (MIAA) for the implementation of stricter border control measures. The agreement with PPA includes authorizing IPOPHL to designate its personnel to participate in the conduct of border inspections to prevent shipment of counterfeit and pirated goods. It also established a MOA with the Securities and Exchange Commission (SEC) to cancel registrations of business establishments found to be violating IP Laws and with the Philippine Economic Zone Authority (PEZA) to promote IP in the special economic zones. IPOPHL is also working on establishing agreements with the Bureau of Immigration and the City Government of Zamboanga for the implementation of laws and conduct of activities on anti-­‐counterfeiting and piracy. In the early part of this year, IPOPHL commended and expressed its gratitude to the City of Manila for implementing a policy on banning the selling of pirated CDs and DVDs. Although Mediation Services is not new to IPOPHL, the public has not realized its full advantages, as this service was ad hoc at best and referral of the cases to mediation was not mandatory. In 2010, IPOPHL institutionalized the mediation services with the new Mediation Rules, making referral of cases to mediation mandatory and setting up a professional group of mediators trained in both mediation skills and intellectual property law. The purpose of offering an alternative to litigation is consistent with the trend in the courts to increase party autonomy and control on how they can best resolve their conflicts in a manner they desire. With mediation, parties can opt for a more flexible, cost-­‐effective and expeditious way of addressing conflicts in their IP rights. To date, the Bureau of Legal Affairs (BLA) and the Office of the Director General (ODG) have referred 420 cases for mediation. While many of said cases are ongoing mediation, so far more than eighty (80) cases were already settled successfully. Recognizing that not all cases can be settled by mediation, IPOPHL has also launched its Arbitration Services in April 2011 in partnership with the Philippine Dispute Resolution Center (PDRCI). Arbitration differs from mediation in that the arbitrator will decide the case, much like the judge in a case while in mediation, the parties decide on their terms of settlement. With arbitration in place, IPOPHL now boasts of being the only IP office in the Asia Pacific region to have a multi-­‐door justice system comprising of a quasi-­‐judicial function for adjudicating IP conflicts and two (2) alternatives – mediation and arbitration mechanisms. BUILDING THE INNOVATION ECOSYSTEM In 2010, IPOPHL entered into a cooperation agreement with the World Intellectual Property Organization (WIPO) on the establishment and support of Innovation and Technology Support Offices (ITSOs). This project aims to support innovation activities by strengthening local institutional capacity to access patent information and the use of the patent system. Patent information is vital to the university’s research initiatives because it helps researchers avoid duplications in research work by ascertaining if a patent already exists on the same technology. More importantly, patent information helps researchers navigate through the technology space to find the gaps where research will bear most results and determine the market demands for outputs of their researches. In fact, local businesses can also benefit from patent information because it is a rich source of global technology information available from the seventy-­‐five (75) million patents in the world. After discovering what technologies are useful for their business operations, they can license the same from the patent holder if the technology is patented in the Philippines, otherwise, the technology is free for the taking. Industries can benefit from patent information to increase their productivity, efficiency and costs as well as innovate their products and services. Thus, through the ITSOs all over the country, the academe can collaborate with industries to use the patent system to push for innovation. Pursuant to a franchise agreement, IPOPHL will provide technical assistance, continuing training, common structures and technologies for franchisees to open and operate the ITSOs. For this purpose, a special certificate program for IP was designed for ITSO. The curriculum which run for eleven (11) months was tailored for the technical staff and IP manager. The program was implemented in partnership with WIPO as well as other development partners such as the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), the International Intellectual Property Institute (IIPI) and the European Union’s Trade Related Technical Assistance Project 2 (TRTA 2). Throughout 2011, ITSO’s were trained by no less than the IP Experts from Germany, Singapore, United States of America, Great Britain and Switzerland. The training year culminated with a Patent Agents Qualifying Examination (PAQE) that saw nearly a hundred university professors and researchers across various technical fields from agriculture, civil and mechanical engineering, life sciences, biotechnology, electronics to information technology and telecommunications vying for accreditation by IPOPHL. IP IN THE REGIONS IPOPHL widened its reach and coverage by launching three (3) more IP Satellite Offices (IPSOs) in the cities of Cagayan de Oro, Tuguegarao, and Tacloban in January, February and April 2011, respectively, bringing the total number of IPSOs to ten (10). The other IPSOs are located in the provinces of Cebu, Davao, General Santos, Baguio, Angeles (Pampanga), Iloilo, and Legaspi. The launching of IPSOs in strategic areas in the country makes IP services accessible to IP stakeholders in the regions. It is a strategy to harness the creativity and innovative skills of IP generators like SMEs, the academe, inventors, and artists, among others. A strong IP-­‐inspired culture of innovation and creativity brings forth business success, which in turn leads to countryside and national development, indicators that raise the barometer of the country’s global competitiveness. IP STRATEGY AND POLICY IPOPHL amended the Implementing Rules and Regulation on Patents, Utility Model, and Industrial Design in 2011 after more than two (2) years of study and deliberation with examiners and stakeholders. Ten (10) years of experience implementing the Intellectual Property Code in 2010. The amendments were made to streamline the patent registration process, clarify ambiguous provisions in the law and standardize certain practices that were found effective in raising the quality and transparency in granting registrations. The amendments were approved on 20 April 2011 and became effective after its publication. At the same time, IPOPHL also approved the Examination Guidelines relating to Pharmaceutical Inventions involving Known Substances which provides the administrative interpretation of the provisions of Republic Act 9502 or the “Universally Accepted Cheaper Medicines Act of 2008.” The Guidelines, which forms an integral part of IPOPHL’s Manual on Substantive Examination Process (MSEP), recognize the importance of safeguarding public health considerations vis-­‐a-­‐vis granting patents for drugs or medicines by specifying in great detail how an invention of such nature satisfies the eligibility standard of novelty, inventive step and industrial applicability for patent protection and, conversely, when a subject matter falls in any of the contemplated non-­‐patentable inventions under RA 9502. In its essence, the Guidelines emphasize the importance of preventing inventions that contain knowledge that has become part of public domain, whether explicit or inherent, from “crawling back” into the patent space in order to prevent ever-­‐
greening of patents. Accession to the Madrid Protocol is one of the initiatives that the IPOPHL has taken towards modernizing the Philippine Trademark System in order to provide trademark owners, especially Filipino brand owners, with a better intellectual property (IP) environment to ensure protection for their marks. Protection of trademarks is an important strategy for businesses worldwide, especially those that have expanded overseas or are seeking to penetrate foreign markets. Marks serve to distinguish the goods and services of business owners in their country and in their export markets. As Filipino trademark owners go global, the IPOPHL must keep up and respond to their need to have access to a global infrastructure that would provide them with an easier and cost-­‐effective means to protect their marks abroad. Securing protection for marks in foreign jurisdictions can be administratively complicated and expensive, so it is important for them to have access to a global protection system to secure registration of their trademarks. Madrid Protocol is a procedure that simplifies the protection of trademarks in multiple countries by allowing the trademark holder to file a single application, in one language, in one national IP Office, such as the IPOPHL. Madrid Protocol is merely procedural and does not affect substantive law in the Philippines. Membership by the Philippines in Madrid Protocol will not impact on substantive rights of Filipino and non-­‐Filipino trademark owners and does not require any amendment of Republic Act No. 8293, the Intellectual Property Code of the Philippines (IP Code), which governs the trademark system in the country. Accession to the Protocol will not affect the Philippine Government’s policy relating to intellectual property, specifically trademarks. The IPOPHL will still determine whether or not marks filed via Madrid can be registered in the Philippines according to the IP Code and Trademark Regulations. The IPOPHL will apply the same standards of registrability used for trademark applications filed directly in the country. The IPOPHL recommended accession to the Madrid Protocol for the following reasons: • The Protocol provides trademark holders with the option of seeking protection for their marks in multiple countries with a simple and cost-­‐effective filing procedure. Filipino trademark owners have the option of filing multiple trademark applications in different countries with a single Madrid application filed with the IPOPHL. • It will significantly reduce the costs associated with trademark registration and maintenance in multiple countries. Trademark owners need not hire counsel outside the Philippines when they file applications in other countries. The only point when they will need to hire foreign lawyers is when a designated IP Office refuses their application. There will be no need to translate their applications in the national language of the IP Office where they file their application because English is an official language of all Madrid Protocol Member-­‐Countries. In case of changes in ownership, address, and similar occurrences, there is no need to communicate with all the IP Offices where their marks are registered. These changes will be made via the Madrid System. • It provides legal certainty for trademark applicants because regardless of the trademark procedures of the countries •
•
The Philippines, together with the other Member States of the Association of Southeast Asian Nations (ASEAN)1, have agreed to accede to the Madrid Protocol by 2015 as part of economic integration efforts through investment and intellectual property (IP). Participation of ASEAN in the Madrid Protocol will help transform the region into a formidable bloc in the international community and one that provides a conducive environment to creators/owners and users of IP. 1
where they seek protection, they are assured of an action on their application within a period of either 12 or 18 months. Membership in the Protocol will align the trademark filing procedures of the Philippines with its major trading partners and top trademark filers—the United States, China, Switzerland, Japan, France, Germany, South Korea, Singapore—all of whom have acceded to the Madrid Protocol. Trading with these partners will be facilitated by accession to Madrid Protocol. The Philippines will become a more attractive investment option to foreign trademark holders exploring new markets, specifically those that participate in global IP infrastructures, such as the Madrid Protocol. Globalization has forced businesses to expand due diligence work and investment strategies to countries beyond their actual market operation. Part of the business consideration now is finding a possible new market with a reliable trademark infrastructure. Foreign businesses without any presence in the country will see the Philippines as a viable option, as a possible market where trademark protection can be obtained through an easy, efficient, and predictable system. Only Singapore and Vietnam are members of Madrid Protocol.
IPOPHL V
ISION,
S
TRATEGIC
MISSION &
GOALS
THE IPOPHL ORGANIZATION THE MANAGEMENT ATTY. RICARDO R. BLANCAFLOR Director General ATTY. ANDREW MICHAEL S. ONG Deputy Director General for Operations, Legal, Policy & International Relations ATTY. ALLAN B. GEPTY Deputy Director General for Management Support Services DR. EPIFANIO REY M. EVASCO Director IV Bureau of Patents ATTY. LOLIBETH R. MEDRANO Director III Bureau of Patents ATTY. LENY B. RAZ Director IV Bureau of Trademarks ATTY. MA. CORAZON DP. MARCIAL Director III Bureau of Trademarks ATTY. NATHANIEL S. AREVALO Director IV Bureau of Legal Affairs ATTY. EDWIN DANILO A. DATING Director III Bureau of Legal Affairs MS. CARMEN G. PERALTA Director IV Documentation, Information & Technology Transfer Bureau MS. VINA LIZA RUTH C. CABRERA Director IV Management Information Service MS. LOURDES F. ALABARCA Director III Management Information Service MR. FRISCO L. GUCE Director IV Financial Management and Administrative Service MR. ERIC T. LANADO Director III Financial Management and Administrative Service THE PEOPLE KEY POSITIONS (MANAGEMENT AND DIVISION CHIEFS) TECHNICAL (EXAMINERS, LAWYERS, PATENT RESEARCHERS, AND INFORMATION OFFICERS) SUPPORT TO TECHNICAL ADMINISTRATIVE TOTAL TECHNICAL POSITIONS PATENT EXAMINERS TRADEMARK EXAMINERS LAWYERS INFORMATION OFFICERS PATENT RESEARCHERS TOTAL FILLED 41 26 9 4 8 88 FILLED 30 88 58 76 252 I
THE NTELLECTUAL Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code) which was signed into law on June 6, 1997 and took effect on January 1, 1998, created the IPOPHL. Recognizing the importance of an effective intellectual property system, the IP Code in its Declaration of State Policy, stated the following: “Section 2. Declaration of State Policy. -­‐ The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks, and copyright, to P
ROPERTY
C
ODE
liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines.” To implement the above State policies, the IPOPHL: Examines applications for grant of letters of patent for inventions and register utility models and industrial design. Examines applications for the registration of marks (including internet domain names as marks), geographical indications, and integrated circuits. Registers technology transfer arrangements, settles disputes involving technology transfer payments, and develops and implements strategies to promote and facilitate technology transfer. Promotes the use of patent information as a tool for technology development. Publishes regularly the patents, marks, utility models, and industrial designs issued and approved, and the technology transfer arrangements registered. Coordinates with other government agencies and the private sector to strengthen the protection and enforcement of intellectual property rights in the country. Administratively adjudicates cases affecting intellectual property rights: § Complaints for violation of laws involving Intellectual property rights § Opposition to/cancellation of registration marks § Cancellation of patents, compulsory licensing IPOPHL is composed of six (6) bureaus under the IP Code. Under the Office of the Deputy Director General for Operations, Legal, Policy, and International Relations are the Bureau of Patents, Bureau of Trademarks, Bureau of Legal Affairs, and the Documentation, Information, and Technology Transfer Bureau. On the other hand, the service bureaus Management Information Service and the Financial Management and Administrative Service are under the Office of the Deputy Director General for Management Support Services. OUR MAIN PRODUCTS PATENT REGISTRATION It is an exclusive right granted for a product, process or an improvement of a product or process, which is new, inventive and useful. This exclusive right gives the inventor the right to exclude others from making, using, or selling the product of his invention during the life of the patent. A patent has a term of protection of twenty (20) years providing an inventor significant commercial gain. In return, the patent owner must share the full description of the invention. This information is made available to the public in the form of the Intellectual Property Official Gazette and can be utilized as basis for future research and will in turn promote innovation and development. Patentable inventions offer a technical solution to a problem in any field of human activity. However, theories, mathematical methods, methods of treatment and artistic creations are Non-­‐Patentable inventions. TRADEMARK REGISTRATION A trademark is a tool used to differentiate goods and services from each other. It is a very important marketing tool that makes the public identify goods and services. A trademark can be one word, a group of words, sign, symbol, logo, or a combination of any of these. Generally, a trademark refers to both trademark and service mark, although a service mark is used to identify those marks used for services only. Trademark is a very effective tool that makes the public remember the quality of goods and services. Once a trademark becomes known, the public will keep on patronizing the products and services. Utilized properly, a trademark can become the most valuable business asset of an enterprise. In addition to making goods and services distinctive, the owner of a mark may earn revenues from the use of the mark by licensing its use to another or though franchising agreements. UTILITY MODEL REGISTRATION A Utility Model is a protection option, which is designed to protect innovations that are not sufficiently inventive to meet the inventive threshold required for standard patents applications. It may be any useful machine, implement, tool, product, composition, process, improvement, or part of the same, that is of practical utility, novelty, and industrial applicability. A utility model is entitled to seven (7) years of protection from the date of filing, with no possibility of renewal. Utility model registration is intended to accommodate local industries, small businesses or entities by providing an industrial property right that is relatively inexpensive, quick, easy to obtain and suited to innovations having short commercial life. Utility model registration is a useful tool in supporting the first to market place advantage. It promotes progress of technology and encourages innovation among small and medium businesses and the local industry. It is inexpensive and easy to obtain, however it can't be enforced until after examination has been carried out and the registration is certified. A utility model is examined to determine if it meets the requirements embodied in the existing Utility Model law and its Implementing Rules and Regulations (IRR). It need not undergo substantive examination before it is certified. INDUSTRIAL DESIGN REGISTRATION An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-­‐dimensional features, such as the shape or surface of an article, or of two-­‐
dimensional features, such as patterns, lines, or color. Industrial designs are applied to a wide variety of products of industry and handicraft: from technical and medical instruments to watches, jewelry, and other luxury items; from house wares and electrical appliances to vehicles; from textile designs to leisure goods. To be protected under most national laws, an industrial design must be non-­‐functional. This means that an industrial design is primarily of an aesthetic nature and any technical features of the article to which it is applied are not protected. When an industrial design is protected, the owner – the person or entity that has registered the design – is assured an exclusive right against unauthorized copying or imitation of the design by third parties. This helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity, and promoting more aesthetically attractive products. Protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute to the expansion of commercial activities and the export of national products. Industrial designs can be relatively simple and inexpensive to develop and protect. They are reasonably accessible to small and medium-­‐sized enterprises as well as to individual artists and craftsmen, in both industrialized and developing countries. COPYRIGHT DEPOSIT Copyright is the legal protection extended to the owner of the rights in an original work. “Original work” refers to every production in the literary, scientific, and artistic domain. Among the literary and artistic works enumerated in the IP Code are books and other writings, musical works, films, paintings and other works, and computer programs. Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as their content, quality and purpose. Thus, it does not matter if, in the eyes of some critics, a certain work has little artistic value. So long as it has been independently created and has a minimum of creativity, the same enjoys copyright protection.
Deliver quality and timely patents, trademarks, and other registrations TRADEMARK FILINGS AND REGISTRATIONS (Note: Statistics for 2011 are as of December 15, 2011 only) Compared with filings in 2010, trademark filings increased by 7% in 2011. From 16,812 applications in 2010, IPOPHL received 17,928 applications in 2011. Non-­‐resident applications comprised 43% of the total filings. Both resident and non-­‐resident filings increased by 5% and 8%, respectively from last year. The USA continues to be the top filer of non-­‐resident applications contributing 23% to the total number of applications filed. Meanwhile, registrations for trademark decreased from 12,028 in 2010 to 11,487 in 2011. From an average of 10 months at the end of 2010, the average turnaround time from filing to registration of trademarks was reduced to 8.32 months in 2011, a 17% improvement. NCR continues to be the top region contributing 65% of the total number of filed resident applications. The four other regions: Central Visayas (Region 7), CALABARZON and MIMAROPA (Region 4), Central Luzon (Region 3), and Davao Region (Region 11), were among the top 5 regions in the Philippines with the most number of trademark filings in 2011. (Note: Region 4 was divided into Region 4A-­‐CALABARZON and Region 4B-­‐
MIMAROPA). INVENTION PATENT FILINGS AND GRANTS (Note: Statistics for 2011 are as of December 15, 2011 only) Invention patent filings decreased by 11% from 3,391 in 2010 to 3,021 applications in 2011. Of the total filed, 85% were received through the PCT. Patent grants decreased from 1,153 in 2010 to 1,051 grants in 2011. On average, it takes 4.86 years from filing to grant of invention patent, only a slight difference from 4.84 years in 2010. PCT FILINGS (Note: Statistics for 2011 are as of December 15, 2011 only) Filings coming in through the PCT decreased by 16% in 2011 compared with 2010. USA remains the top filer contributing to 32% of the total PCT filings in 2011. The other top three (3) countries: Japan (13%); Switzerland (11%); and Germany (9%), remain in their respective ranks for both years. UTILITY MODEL FILINGS AND REGISTRATIONS (Note: Statistics for 2011 are as of December 15, 2011 only) Utility model applications neither increased nor decreased in 2011 with 617 applications filed. Resident applications account for 94% of utility model filings. Non-­‐resident applications increased by 6% while there was no change in resident filings. Meanwhile, registrations for utility model decreased by 2% in 2011. Currently, the average turnaround time from filing to registration of utility model is at 8.31 months, an increase of 51% from 5.50 months in 2010. INDUSTRIAL DESIGN FILINGS AND REGISTRATIONS (Note: Statistics for 2011 are as of December 15, 2011 only) Industrial design applications increased by 25% from 847 applications in 2010 to 1,058 in 2011. Resident applications comprise half of the total filings. Resident and non-­‐resident filings both increased by 20% and 30%, respectively. Registrations decreased by 2% in 2011 from last year. Currently, the average turnaround time from filing to registration of an industrial design is at 6.08 months, a slight decrease of 8% from 6.64 months in 2010. INTEGRATED INTELLECTUAL PROPERTY MANAGEMENT SYSTEM The Integrated Intellectual Property Management System (IIPMS) Project is one of the IPOPHL’s flagship projects. It is aligned with IPOPHL’s strategic goal of providing quality and timely patents, trademarks, and other registrations. One of its major components, the implementation of the Industrial Property Automation System (IPAS), is undertaken by the IPOPHL jointly with the World Intellectual Property Organization (WIPO), which formally commenced in September 2010. IPAS is an automated IP system owned by WIPO designed for IP offices, and is given to Member States under a package of technical assistance for free. The technical assistance includes the use by IPOPHL of the software, including its upgrades, and technical consultancy for IPAS implementation and the conduct of the sub-­‐projects required for the deployment of the system. It covers end-­‐to-­‐end processing of IP (patents, trademarks, utility model, and industrial design) applications throughout their life cycle, including printing of certificates, publication, and post-­‐registration. It also allows users to track the applications/registrations at all stages of processing. It is web-­‐based and has advanced search tools. IPAS is a very flexible system and can be easily customized depending on the requirements of a specific IP office. It is also constantly being improved based on the best practices of the IP office. The IIPMS includes the clean-­‐up of the patents and trademarks databases and streamlining of the processes. The IPAS Implementation Project, a major component of IIPMS, consists of three projects: Utility Models and Industrial Designs, Inventions, and Trademarks. The following are the major outcomes of the IIPMS: (1) a more efficient and highly effective IPOPHL that delivers timely and quality services following best practices and international standards and; (2) reduction by 30% in the processing time of IP applications within 1 year of full IPAS deployment. IPAS for Patents will go live in March 2012. ASEAN PATENT SEARCH EXAMINATION COOPERATION Officials and senior patent examiners from member nations of the ASEAN (with the exception of Lao and Myanmar) participated in the Inaugural Meeting of the Task Force on the ASEAN Patent Search Examination Cooperation (ASPEC-­‐TF) on May 2011 conducted at New World Hotel, Makati City. ASPEC is a program for IP offices to utilize the search and examination results from other ASEAN Member State IP Offices as reference in their own search and examination work. It allows patent applicants making a request under ASPEC in any of the participating IP offices to obtain patents faster and more efficiently, and helps ease the workload of the examiners, reduce work, increase turnaround time, and generate better quality search and examination results. The ASPEC-­‐TF had a very constructive discussion and came up with recommendations for the successful implementation of ASPEC. They agreed that the officials present during the TF meeting be the focal persons for the ASPEC implementation. The result of their discussion is subject to the approval/consideration of the ASEAN Working Group on IP Cooperation (AWGIPC). Provide speedy, quality, and effective legal remedies and be the forum of choice for IP dispute resolution INTER PARTES AND INTELLECTUAL PROPERTY VIOLATION CASES (Note: Statistics for 2011 are as of December 15, 2011 only) IPOPHL’s Bureau of Legal Affairs (BLA) has evolved from a strictly adjudicatory body into one that is in charge of enhancing IP legal education, knowledge and practice. To cope up with its “new” role and responsibilities, the BLA needed to reengineer itself and so, redesigned its operational structure. It organized itself into two (2) Adjudication Teams, the Records Management Team, and the Office of the Director, which includes the Office of the Assistant Director, the Case Management Section and the Legal Education, Events and Capacity Building Section. IPOPHL has received 528 Inter Partes Cases (IPC) and 28 Intellectual Property Violation (IPV) Cases in 2011, a total of 556 cases. It has disposed a total of 243 cases composed of 222 IPC and 21 IPV, a 98% increase from 2010. The current turnaround time from filing to disposal of IPC and IPV is at 1.15 and 2.43 years, respectively. ALTERNATIVE DISPUTE RESOLUTION Parallel to the strengthening of the BLA’s adjudicatory processes, the IPOPHL also identified the need to establish a modern alternative dispute resolution (ADR) unit that will serve as a viable alternative to case adjudication. While a mediation program has been in place in the IPOPHL since 2004, its full potential had not been realized because of the absence of an administrative mechanism in place to provide support, supervision and skills enhancement programs to the mediators, and information, guidance and assistance to the disputants and the general public. Moreover, program success was hampered by the fact that under the then set-­‐up in the IPOPHL, referral to mediation was voluntary, and since mediation was not actively promoted in previous years, there was little incentive for the parties to voluntarily agree to submit to a settlement process. In 2010, IPOPHL revived this service and revised its Implementing Rules and Regulations by making mediation mandatory. This move ensured the unclogging of the IPOPHL dockets and promised to resolve cases quickly with less cost incurred by the parties. Currently, 420 cases have been referred for mediation by the BLA and Office of the Director General (ODG) and out of these, more than eighty (80) cases were settled successfully. MOA Signing and Launching of Arbitration Mechanism at the Supreme Court of the Philippines In April 2011, IPOPHL launched its specialized arbitration as another form of dispute resolution in a ceremony held at the Supreme Court of the Philippines. Supreme Court justices, IP organizations, and arbitrators attended the launch and Justice Jose P. Perez graced the event and officiated the oath taking of the arbitrators. With both arbitration and mediation at its helm, IPOPHL takes pride in being the first intellectual property office in the Asia Pacific region to establish a multi-­‐
door justice system comprising of a quasi-­‐judicial function for adjudicating IP conflicts and two (2) alternatives – mediation and arbitration mechanisms. The IPOPHL established the arbitration mechanism consistent with the rules and practices of WIPO, making the country’s arbitration facility at par with WIPO standards. The partner of IPOPHL in the arbitration service is the Philippine Dispute Resolution Center, Inc. (PDRCI), the leading institutionalized arbitration center in the Philippines. For purposes of training the arbitrators, IPOPHL designed a special course on IP while PDRCI designed an arbitration course, and the training culminated with no less than the Director of WIPO Arbitration and Mediation Center leading an advanced course on Mediation while his deputy director a course on arbitration in the Philippines. In addition, two (2) of the arbitrators were joined the specialized training of WIPO on domain name disputes in Geneva. ANTI-­‐COUNTERFEITING AND PIRACY INITIATIVES The issuance of injunctive relief restrains infringing acts, including the use, distribution, and sale of counterfeit or pirated products. In February 2011, IPOPHL issued an Office Order amending certain provisions of the IRR on administrative complaints for Intellectual Property Rights Violation. Under the order, the Director of the Bureau of Legal Affairs may issue ex-­‐parte a 72-­‐hour temporary restraining order (TRO) that may be granted on grounds of extreme urgency and that the applicant will suffer grave injustice and irreparable injury. If the evidence warrants, the TRO can be extended up to 20 days. During said period, the application for the issuance of the preliminary injunction may be heard. The preliminary injunction may last during the entire period of the proceedings or until the case is decided. Moreover, the amendments now explicitly allow the introduction of forensic evidence, which is also envisioned to modernize the adjudication process. Efficient and effective enforcement of laws as well as promotion of programs and projects geared toward the protection and enforcement of intellectual property rights (IPR) is vital to the achievement of strong, balanced and viable intellectual property system. To strengthen IPR protection and enforcement, the IPOPHL laid down six paths for an Intellectual Property (IP) Friendly Philippines. These six (6) paths, which are complementing and mutually reinforcing, are as follows: 1) “holistic approach” to effective enforcement; 2) heightened public education and awareness to build an IP friendly constituency; 3) institution and capacity building of relevant government and private MOA Signing between the Securities Exchange Commission (SEC) and the Intellectual Property Office of the Philippines (IPOPHL) institutions toward an IPR regime; 4) timely and quality IPR adjudication and other forms of dispute resolution; 5) continuing policy, advocacy and legislative reforms; and 6) sustained international relations. The “holistic approach” calls for the integration of agencies in charge of customs, foreign trade, domestic trade, revenue, and consumer protection to enforce and protect IPR. This approach focuses on improving border controls along with the effective use of tax, fraud and other laws, which targets organized criminal activities. The government also recognized that successful protection of IPR is not only dependent on government efforts but is achieved with the support of private stakeholders. Pursuant to this approach, IPOPHL entered into agreements with different government agencies to prevent the entry of counterfeit and pirated goods in the country and proliferation in the Philippine market. The agreements also aim to promote IP to the public. In its agreement with the Philippine Ports Authority (PPA) signed in March 2011, stricter border control measures shall be implemented to prevent the use of seaports as entry and exit points of counterfeit and pirated goods. Under the agreement, IPOPHL may assign or detail its personnel to work together with the PPA in conducting border inspections. PPA shall in turn assist the members of the National Committee on Intellectual Property Rights (NCIPR) in the surveillance, investigation, and apprehension of persons within the ports involved in counterfeiting and infringement activities. Aside from the PPA, IPOPHL entered into an agreement with MIAA for the prevention and suppression of the importation, exportation, sale, wholesale, and distribution of pirated and counterfeit products. IPOPHL also signed an agreement with the Securities and Exchange Commission (SEC) on April 2011 on the cancellation of registrations of business establishments found to be violating the IP Law. The guidelines for the implementation of the agreement are being finalized. Another agreement was sought with the Philippine Economic Zone Authority (PEZA) in the same month to promote the use of IP among ecozone locators and facilitate IP registration in special zones. This move is one of IPOPHL’s ways of boosting investments in the country. It also signed an agreement with the Anti-­‐
Money Laundering Council (AMLC) to cooperate in areas of information exchange and capacity building to enhance their capability in addressing infringement of IPR and money laundering concerns. IPOPHL-­‐MIAA-­‐OMB MOA Signing Moreover, the government established public-­‐private partnerships to get the commitment and support of brand owners/rights holders in pursuing and prosecuting IPR violation cases. In July 2011, it signed a Memorandum of Agreement (MOA) with the Motorcycle Development Program of the Philippines Association (MDPPA) to generate awareness about the importance of IPR on the social and economic development of the manufacture of motorcycles and its parts. Under the agreement, IPOPHL shall give technical assistance and capacity building seminars on IP to members of the MDPPA while they in turn will conduct product identification workshops and assist the law enforcement agencies in the surveillance, investigation, and apprehension of those involved in counterfeiting activities of motorcycle parts. Both will also design a monitoring system to detect shipment of counterfeit goods. To support brand owners/rights holders in pursuing prosecution of IPR cases, IPOPHL has secured the availability of a warehouse facility for their use, free of charge, during the pendency of the IPR violation cases. A campaign to clean up known notorious shopping malls selling fake products was also initiated for local business groups to institutionalize self-­‐policing measure and establish a mechanism to thwart any potential attempt to violate IP rights. The IPOPHL also strengthened the mechanism for prosecution of IPR violations by seeking the active participation of the Department of Justice (DOJ) by providing full-­‐time prosecutors for the handling of IPR violation cases. The agencies tasked to combat counterfeiting and piracy stepped up its fight by putting into motion the cohesive and coordinated raids, seizures, confiscation of IP infringing goods in the country. From 2005 to 2011, the combined enforcement operations of the concerned government agencies resulted in the confiscation of 31 replicating machines, 31 containers, 13,983.5 boxes and 2,138,911 pieces of pirated and counterfeit goods amounting to Php26.7 billion (US$6.16 million @43.34USD). IPOPHL also takes the lead in enhancing the capacity and capability of the members of the NCIPR. It has conducted five (5) seminars, namely: Training Seminar for Public Prosecutors on the Investigation and Prosecution of Hard Goods, Counterfeiting and Digital Piracy – for DOJ (02-­‐04 March 2011); Training on Surveillance, Investigation and Evidence Preservation of Seized Counterfeit Drugs – for FDA (1st batch: 21-­‐23 March 2011 & 2nd batch: 12-­‐14 April 2011); Training on Surveillance, Investigation and Evidence Preservation of Seized Pirated and Counterfeit Goods – for PPA (28-­‐29 April 2011); IPR Business Partnership Workshop on Border Control Measures – for NCIPR Members (23-­‐
25 October 2011); Basic IP and Product Orientation – for MIAA (24-­‐25 Nov. 2011). The City Government of Manila through the leadership of Mayor Alfredo Lim banned the sale of pirated optical media in Manila in 01 July 2011. Public consultation in Quezon City to replicate Manila’s action against counterfeit items is ongoing. IPOPHL held a meeting with Zamboanga City Mayor Celso Lobregat in institutionalizing a partnership with the City Government of Zamboanga for the establishment of a Regional IPR Coordination Center. Innovative ways in terms of disposition of confiscated goods were also adopted. These methods involve the use of existing government resources such as military tanks, road rollers and shredding machines. Recycling has also been used to convert junk compact discs to everyday items, including household products, building materials and auto parts. These methods are not only cost efficient but are also environment-­‐friendly. Recognizing these efforts, IPOPHL Director General Ricardo R. Blancaflor was invited to the Sixth Global Congress on Combating Counterfeiting and Piracy in February 2011 in Paris, France to be one of the speakers on “Responsible destruction – Eco-­‐friendly and socially equitable disposal of infringing goods.” Destruction of Counterfeit Goods during the World Anti-­‐
Counterfeiting Day 2011 Celebration th
6 Global Congress on Combating Counterfeiting and Piracy Annually, IPOPHL celebrates the World Anti-­‐Counterfeiting Day by leading a ceremonial destruction of counterfeit and pirated products in partnership with the members of the NCIPR. This year, the destruction was done at the PNP grounds in Camp Crame on June 2011. 2012-­‐2016 PHL ACTION PLAN ON IPR PROTECTION AND ENFORCEMENT The Philippines is cognizant of the importance of intellectual property (IP) promotion, protection and enforcement in boosting the economy as well as the menace that counterfeiting and piracy causes. The IP environment shall provide an atmosphere whereby local creativity and innovativeness are developed, nurtured, and sustained while promoting respect for intellectual property rights (IPR). Interestingly, it has been a challenge for the national government to consolidate and intensify its efforts on IPR enforcement. IPOPHL itself, while mandated to administer and implement laws on IP and enhance the enforcement of IPR, has no enforcement power. On the part of other law enforcement agencies and government agencies involved in IPR protection and enforcement, they do not have permanent IPR Units to handle IPR violation cases. Issues on consistency and coherence in policies and actions, among others, therefore become an additional barrier to hurdle. Hence, the need for a concrete medium term action plan on IPR protection and enforcement that will pave the way for the realization of the Philippine’s vision to become an IP-­‐friendly country. Moreover, one of the goals of the Philippine Development Plan for 2011-­‐2016 is to “Create a Better Business Environment.” The 2012-­‐2016 Philippine Action Plan on IPR Protection and Enforcement sets the parameters by which we gauge the IP situation in the country. The Philippine Action Plan will enhance existing programs on IP education and awareness, capability-­‐building for relevant institutions and groups, expanding border control measures in more regions, speedy and quality disposition of IPR cases, policy advocacy, pushing pending legislative bills, domestic and international partnerships, strengthen coordinating mechanisms; reconfigure enforcement tools and mechanisms to keep pace with advancements in technology; and endeavor to fill in the gaps on IPR enforcement operations like focusing attention on establishing a sense of “permanency” within the NCIPR membership and IPR units in government agencies. The action plan consists of eight (8) strategic goals: (1) Government to lead the way to ensure an effective enforcement of IPR; (2) Enhance inter-­‐agency coordination on the promotion, protection, and enforcement of IPR; (3) Ensure a speedy and quality disposition of IPR violation cases; (4) Strengthen the legal and policy infrastructure; (5) Enhance the capabilities of enforcement agencies and personnel involved in IPR enforcement; (6) Develop an IP culture that promotes and respect IPR; (7) Ensure accession to international treaties and compliance with international commitments; and (8) Sustain the momentum of enforcement activities in 2012-­‐2016. The programs and projects contained in the Philippine Action Plan also intend to promote the effective use of the IP System and maximize its contribution to national development. The sustained use of the IP System definitely builds up the confidence of the community and consequently motivates the creators to generate more of their intellectual creations. Stakeholders are encouraged to actively play their respective roles. This kind of IP environment will naturally instill in the mindsets of IP users, consumers and manufacturers alike, a healthy respect for IPR and likewise necessitates more robust engagements with our trading partners.
Provide IP-­‐related business development and technology transfer services BUILDING THE INNOVATION ECOSYSTEM The establishment of Innovation and Technology Support Offices (ITSOs) is a pioneering project of IPOPHL, with the assistance of the World Intellectual Property Organization (WIPO), for strengthening local institutional capacity to access patent information and the use of the patent system. The ITSOs aim to provide the following: •
•
Assistance in searching technical information using free and/or commercial patent databases, as well as scientific and technical journal (non-­‐patent) databases; Trainings in searching patent databases for local users, aside from providing technology and competitor monitoring; •
•
•
•
Search for business partners and essential know-­‐how; Market and competitor analyses; General information on IP valuation, IP laws and IP strategies (information on filing of patents, trademarks, etc.); and Basic advice on licensing, business plans, IP aspects of product commercialization and raising funds (e.g., government funding). In order to realize the project, the IPOPHL scouted for interested host institutions from the academe and industry organizations during the third and fourth quarter of 2010. At the same time, IPOPHL explored partnerships with government agencies and international IP organizations to support the ITSO project. To date, the following institutions have joined the ITSO Franchise system:
MOA Signing with Ateneo de Manila on hosting of Innovation and Technology Support Office As part of the Franchise to open and operate an ITSO, IPOPHL provided the necessary knowledge orientation and skills training in patent search, patent drafting and patent prosecution. The IPOPHL also instituted standards through a Franchise Manual for the operation and of ITSO, including the business plan that will enable the ITSOs to operate as a self-­‐sustaining entity. On the other hand, the Host Institutions poured in substantial investments into providing the required office space, equipment and fixtures, and hired or assigned qualified technical staff and manager to operate the ITSO. The host institutions also sent its ITSO personnel to all training and capacity-­‐building programs of IPOPHL. Throughout 2011, for elevent (11) months, the training for ITSO was conducted in partnership with WIPO as well as other development partners such as the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), the International Intellectual Property Institute (IIPI) and the European Union’s Trade Related Technical Assistance Project 2 (TRTA 2). The training year culminated with a Patent Agents Qualifying Examination (PAQE) that saw nearly a hundred university professors and researchers across various technical fields from agriculture, civil and mechanical engineering, life sciences, biotechnology, electronics to information technology and telecommunications vying for accreditation by IPOPHL. Ultimately, the ITSO will be the institutional mechanism of IPOPHL to help build the country’s technology innovation ecosystem. Through ITSO, IPOPHL seeks to realize its 2020 Vision in the following manner: • Demystifying the patent system. IPOPHL is building the institutional capacity of universities, R&D entities, government field offices, industry service providers, consultants and associations to teach and conduct, on their own, patent searches, patent drafting and provide assistance in patent prosecution. The end in view is that ITSO will conduct its own training to continue spreading patent searching and drafting skills within its institution and into the community. It will serve the community by conducting patent searches, drafting patents and assisting patent applicants prosecute their patents before IPOPHL. •
Democratizing the patent system. With the presence of ITSO in the local institutions, not only will science and technological knowledge from the patent databases become more readily accessible but it is also expected that there will be an increase in the number of proficient patent searchers, drafters and practitioners in the locality. Eventually, a growing community of patent information users and patent drafters can be organized by IPOPHL for the purpose of engaging a broad-­‐based dialogue and continuing discussion on how to improve the patent system in the country and other issues. •
Development-­‐orienting patent system. The ITSO serves as the institutional link between IPOPHL and potential patent system users. Thus, ITSO brings IPOPHL closer to the public and beneficiaries of the patent system. Further, in choosing the host entities for ITSO to be located, IPOPHL can effectively target particular sectors or industries whose work or business will be greatly benefited by patent information and patent protection. ITSO supports the development of more IP creation, facilitate IP protection and promote IP utilization by performing the following functions: In Support of IP creation by facilitating access to global science & technology information: • Serve as a patent search facility and library for patent information; • Provide skills training in patent searching; • Render patent search services; and • Organize a community of patent information users. In Support of IP protection by promoting domestic and globally-­‐recognized innovations: • Provide general information on patents and patenting; • Provide skills training in patent drafting and prosecution; • Render patent drafting and prosecution services; and • Organize a community of experts to participate in patent examination. In Support of IP utilization by assisting the commercialization of globally-­‐competitive innovations: • Render IP audit and evaluation services; • Provide licensing support; • Provide advice on IP management & commercialization strategies; and • Be a depositary of patent-­‐related documents, papers and statistics. High-­‐level Forum on Innovation Opportunities IP MANAGEMENT AND TECHNOLOGY COMMERCIALIZATION The USPTO Global Intellectual Property Academy (GIPA), the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC), and the ASEAN Secretariat (ASEC) in cooperation with IPOPHL organized the Regional Seminar on IP Management and Technology Commercialization in June 2011 as one of the activities under the extended arrangement between the ASEAN. Participants from the ASEAN Member States who participated in the activity were officials in charge of innovation, IP management and technology transfer policy; those who are involved in setting up technology licensing offices; and representatives from the technology transfer office of the Ministry of Science and Technology, National Research Laboratories, or university administrators. The seminar aimed to provide information and best practices on technology commercialization and licensing, stressing the importance of commercialization of technologies to benefit public research and development institutions (RDIs). It also provided the participants an opportunity to engage in the negotiation process. PROTECTING TK, TCE, AND GR IPOPHL is also working on protecting the economic and cultural assets of indigenous people such as their Traditional Knowledge (TK), Traditional Cultural Expressions (TCE), and Genetic Resources (GR). The role of intellectual property (IP) systems in relation to TK, and how to preserve, protect, and equitably make use of TK, has recently received increasing attention in a range of international policy discussions. These address matters as diverse as food and agriculture, the environment, the conservation of biological diversity, health, traditional medicines, human rights, indigenous issues, and aspects of trade and development. These communal intellectual rights are protected by several different laws: the Indigenous Peoples Rights Act (R.A.8371), The National Cultural Heritage Act (R.A. 10066), and the Intellectual Property Code of the Philippines (R.A. 8293). Under the law, the communal intellectual rights of the Indigenous Cultural Community (ICC) may not be appropriated or used without obtaining their free and prior informed consent and complying with their laws, traditions, and customs. Of relevance to IPOPHL, the R.A. 8371 and its implementing rules and regulations provide mechanisms for the recognition of the IPs’ right to cultural integrity. The rules incorporate significant provisions, such as the constitutional and legal framework for the right to cultural integrity, the conceptual framework for cultural integrity and related rights, including the right to indigenous culture, customs, and traditions; right to establish and control educational learning systems; recognition of cultural diversity; right to name, identity, and history; community intellectual rights; protection of indigenous sacred places; right to protection of indigenous knowledge; and the right to science and technology. In line with these and taking cognizance of IPOPHL’s power to coordinate with other government agencies in order to formulate and implement plans and policies that could strengthen the protection of intellectual property rights in the country, the IPOPHL focused its efforts on establishing connectivity and collaboration with the National Commission on Culture and the Arts (NCCA) and the National Commission on Indigenous Peoples (NCIP). And so, on June 2011, it entered into an agreement with the NCCA and the NCIP to coordinate their efforts and expertise to protect the intellectual property of indigenous peoples. IPOPHL Director General Ricardo R. Blancaflor, NCCA’s Chair Dr. Felipe de Leon, Jr., and NCIP’s Chair Hon. Zenaida Brigida Hamada-­‐Pawid led the MOA signing. The agreement created a Tripartite Technical Working Group dedicated to studying the issues involved and formulating unified policies and programs for the protection of the communal intellectual rights of these indigenous people. At the IPOPHL Lobby Institutionalize copyright support services MOA Signing between the National Library of the Philippines (NLP) and the Intellectual Property Office of the Philippines (IPOPHL) COPYRIGHT REGISTRATION IPOPHL extended its reach in 2011 to sectors that it has never served before, by establishing new delivery mechanisms and stakeholder platforms. IPOPHL partnered with the National Library in January 2011 for copyright notification services. Under its agreement with the National Library of the Philippines (NLP), both agencies shall undertake cooperation and partnership activities geared towards the development and enhancement of copyright and in general IP protection in the country, including the creation of a national database for copyrighted works. The agreement also authorizes IPOPHL to receive the deposit and registration of literary and artistic works, receive assignments and exclusive licenses involving copyrighted works, and receive the written instrument which names the person/s to be charged with posthumous enforcement rights under the pertinent sections in the IP Code. As an additional protection, IPOPHL requires the applicant to execute an affidavit of ownership, which will be reproduced at the back of his certificate. This will serve as prima facie evidence of ownership and may be used in any court proceeding. As its first issuance, IPOPHL granted copyright registration and deposit certificates for the paintings created by former President Corazon C. Aquino. These certificates were awarded to the Ninoy and Cory Aquino Foundation (NCAF). COPYRIGHT AWARENESS ACTIVITIES National Conference on Copyright and the Philippine Film Industry IPOPHL, the World Intellectual Property Organization (WIPO), the National Commission on Culture and the Arts (NCCA), and the Cultural Center of the Philippines (CCP) held in March 2011 a National Conference on Copyright and the Philippine Film Industry for the artists, screenwriters, performers, actors, movie workers, film makers, etc. The conference discussed how creating guilds for screenwriters and actors could be a good way to improve collective bargaining in the film industry, the agenda of the WIPO standing committee on copyright and related rights to draft a treaty on how to protect performers of audio visual works, how technology gives the public access to any content, the need to co-­‐produce works with foreign producers to manage costs, drafting of an ASEAN instrument for the benefit of the artists, and other copyright and trademark concerns. Ms. Donna Hill of WIPO graced the event. Other speakers were Ms. Malou Jacob, NCCA President; Mr. Angelo Lacuesta, Executive Director of the Philippine Film Export Services Office in the Philippines, Ms. Judith Miller of DLA Phillips Fox, and Mr. Rob Aft, President of Compliance Consulting Ltd. National High Level Forum on Innovation and the Creative Industries Ecosystem As a follow up to the First Cebu Creative Industries Summit organized by the Department of Trade and Industry (DTI) in June 2011, IPOPHL, in collaboration with the World Intellectual Property Organization (WIPO), the Department of Trade and Industry-­‐Cebu, the Cebu Chamber of Commerce and the Creative Cebu Council, conducted a high-­‐
level forum in Cebu City in August 2011 that engaged the leaders and decision makers in the creative industries, the academe and relevant government agencies. National Conference on Copyright and the Philippine Film Industry Entitled the “National High Level Forum on Innovation and the Creative Industries Ecosystem”, this two-­‐day high-­‐level discussion to promote the role of IP in protecting creative or innovative works and in enhancing business competitiveness; to exchange best practices in utilizing IP as a crucial component in creative entrepreneurship; and to share experiences in marketing and promoting creative products and services. Participants included the chief executive officers of businesses and industry associations; academicians and those engaged in research and development; and responsible officials of government agencies dealing with business and creative industries. The forum concretely established IP as a key component in creative entrepreneurship, ultimately propelling the creative industries as a major driver of the nation’s economic development, with Cebu City as model. Sen. Teofisto Guingona III, through his representative, delivered the keynote address that highlighted the role of creative industries in national progress and development and emphasized the importance of public-­‐private partnership in fostering creativity and innovation. WIPO’s Deputy Director for Creators and Performers Support Division, Mr. Dimiter Gantchev, spoke on the role of a balanced intellectual property system in development and, in particular, explained the copyright approach to issues affecting the creative industries. Mr. Kenneth Cobonpue, internationally renowned furniture designer, shared his experiences in making his designs globally competitive.
National Seminar on the Management of Intellectual Property in the Advertising Industry On August 24 to 25, IPOPHL collaborated again with WIPO, together with the Advertising Board of the Philippines (AdBoard), in conducting the “National Seminar on the Management of Intellectual Property in the Advertising Industry”. The seminar brought together advertising industry leaders and IP experts to discuss the current situation and challenges faced by the advertising industry in the Asia Pacific Region. The seminar sought to provide a clear picture on the advertising industry in Asia and the Pacific and its contribution to the economy. The event also served as a forum to share ideas, experiences and best practices on how intellectual property is identified, valued and managed in the advertising industry. Delivering the keynote address was Mr. Jones Campos, the Executive Director of the AdBoard. Mr. Gordon Smith, distinguished Professor of IP Management at the University of New Hampshire School of Law in the US, delivered a talk on the valuation of IP rights in the advertising industry, while Mr. Vladimr Yossifov of WIPO presented the best practices for managing copyright and other IP rights in the advertising industry. Increase the level of appreciation of, respect for, and utilization of IP To allow Filipino creativity and ingenuity to flourish and encourage foreign investors in the Philippine market, the IPOPHL invested its time, resources and efforts to develop an “IP Culture” among its stakeholders. The end goal of building an IP constituency is to change public opinion about the IPR status of the country and information dissemination on the use of IP as a tool for the country’s social and economic development. Thus, in January 2011, IPOPHL began utilizing the tri-­‐media in creating public awareness on IPR. To complement the tri-­‐
media approach, IPOPHL conducted a combination of seminars, events and activities targeting the general public and specific sectors. IPOPHL also formalized its partnerships with various organizations and institutions meant to establish a conducive climate towards creating an “IP culture.” To maintain and sustain an “IP culture”, ownership by its stakeholders was developed by IPOPHL through the use of IP Champions and Avatars. Through these, the individuals and organizations that have vigorously pursued the creation of an IP culture are recognized and awarded with a token of appreciation.
1ST PHILIPPINE ANTI-­‐COUNTERFEITING AND PIRACY SUMMIT From October 24-­‐28, 2011, IPOPHL celebrated the annual IPR Week through the conduct of the 1st Philippine Anti-­‐Counterfeiting and Piracy Summit at Makati Shangri-­‐la Hotel, Makati City . With the aim of promoting and heightening public awareness on the grave effects of counterfeiting and piracy to the economy, public welfare, health, and safety, the IPOPHL organized the said event together with the members of the National Committee on Intellectual Property Rights (NCIPR), the World Intellectual Property Organization (WIPO), the US State Department, the IPR Business Partnership and the International Trademark Association (INTA). The opening of the Summit was attended by close to two hundred participants from enforcement agencies of the government, chief executives of local government units, international and local organizations, commercial courts, academe, IP offices from Asia-­‐Pacific countries as well as foreign journalists and local media partners. None other than the Vice-­‐President of the Philippines Jejomar C. Binay served as the Keynote Speaker of the event. He recognized the value of intellectual property in propelling the economy and lauded the efforts, commitment and professionalism of the government officers in their intensive drive against counterfeiting and piracy. Grateful for the assistance of international partners, he also called upon the continuous and strengthened support of the different agencies, local government units and stakeholders. He dubbed the conduct of the Summit as the “first of its kind” in the Philippines that will undoubtedly open the doors towards a more effective system of combating piracy and counterfeiting in our country. He gave his assurance that as Vice President, he will be a staunch advocate of intellectual property. The first two days of the Summit was devoted to the WIPO Workshop on the Dangers of Counterfeit Goods to Public Health. The WIPO is an agency of the United Nations that specializes in developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. The objective of the workshop was to assist in the formulation of strategies on IP awareness by providing the necessary tools that would increase awareness. Discussions centered on understanding the legal framework of IP and the need to respect it, the effects of counterfeiting and piracy and how to combat it, and the importance of increasing IP awareness in all of these areas. There was sharing of experiences on their IP awareness campaigns and the responses made to the challenges met by different groups. The WIPO officials shared various outreach tools that have been designed to help build an IP culture among the general public and change consumer attitudes and perceptions. Ms. Louise Van Greunen cited the important role of the private sector in the design of campaign programs. She emphasized the link between building respect for intellectual property and sustainable development. The workshop culminated with the presentation of the Public Outreach Action Plan formulated by each group, using the template/ guide provided by WIPO, which aims to increase the level of awareness of and respect for IP and help bring to public consciousness the hazard of counterfeiting and piracy. The participants identified the tools that are necessary to implement their public awareness campaign. Mr. Omar Katbi of WIPO invited the participants to formulate and submit their agency’s IPR awareness plans to WIPO for evaluation and possible funding. The IPOPHL also collaborated with the IPR Business Partnership for the conduct of a workshop on Effective Border Control Measures on the third and fourth days of the Summit. The IPR Business Partnership is an inclusive group of more than 40 global businesses covering many industry sectors which hold rights to intellectual property. It also serves as a forum for public-­‐private sector debate, discussion and innovation with express purpose of promoting partnership as a key weapon in combating infringements of intellectual property rights. More than a hundred law enforcement agents from the National Bureau of investigation (NBI), Bureau of Customs (BOC), Philippine National Police (PNP), Optical Media Board (OMB), Department of Justice (DOJ) and other agencies involved in the enforcement of Intellectual Property Rights (IPR) attended the said activity. The same was organized for the purpose of providing training for front-­‐line officials and managers from the different enforcement agencies. On the practical level, the workshop was designed to enhance the effectiveness and efficiency of IPR enforcement by providing assistance, technical support and practical training. The workshop also provided a venue for consultation, coordination and cooperation between the IP rights holders and law enforcers who attended. During the said workshop, the NCIPR and the IPR Business Partnership signed a cooperative agreement to consolidate and facilitate cooperation for the prevention and suppression of the importation, exportation, sale and manufacture of products that infringe the IPR of the members of the IPR Business Partnership. As part of the agreement, both parties will on efforts to identifying new measures that will enhance mechanisms for suppressing IPR infringement. A Roundtable Discussion was also organized in partnership with the International Trademark Association (INTA), which was simultaneously held in the afternoon of October 26, 2011. There were sixty-­‐five attendees, including the Director-­‐General of the IPOPHL, the two Deputy Directors-­‐General of the IPOPHL, a Presiding Judge of the Makati Regional Court, the City Administrator of Manila, representatives from the DOJ, NBI, PNP, AMLC, DTI and sulit.com.ph, the leading online marketplace site in the Philippines. The Roundtable focused on Landlord Liability Measures for IPR Infringement and Counterfeiting on the Internet. After the discussions, the participants adopted action plans on how to facilitate enforcement against landlords for IPR infringement committed by their tenants and on how to address the sale of counterfeits on the Internet. The IPOPHL committed to push for the passage of laws that will expressly incorporate landlord liability for IPR infringement committed by their tenants. The participants also supported the conduct of a follow-­‐up seminar specifically for online marketplace site to assist them in their efforts to combat Internet counterfeiting, and to allow them to coordinate with the relevant government agencies. On the closing of the Summit, the IPOPHL presented to the Office of the President the 2012-­‐
2016 Philippine Action Plan on IPR Protection and Enforcement. The same will (1) enhance existing programs on IP education and awareness, capability-­‐building for relevant institutions and groups, expanding border control measures in more regions, speedy and quality disposition of IPR cases, policy advocacy, pushing pending legislative bills, domestic and international partnerships; (2) strengthen coordinating mechanisms; (3) reconfigure enforcement tools and mechanisms to keep pace with advancements in technology; and (4) endeavor to fill in the gaps on IPR enforcement operations like focusing attention on establishing a sense of “permanency” within the NCIPR membership and IPR units in government agencies. The efforts of the IPOPHL and NCIPR in battling piracy and counterfeiting was recognized by Mr. Peter Fowler, the Regional IP Attache of USPTO. He said that the most significant thing represented in the Summit was that the Philippines is on track, not just only in breaking records but also also on track in improving the general enforcement environment in the country. He remarked that the move by the Philippines to seriously take piracy and counterfeiting deserves an applause and congratulations for showing that government can do what a lot of people hope to do. IP IN THE REGIONS IPOPHL launched three (3) more IP Satellite Offices (IPSOs) in the cities of Cagayan de Oro, Tuguegarao, and Tacloban in 2011. The launching of IPSOs in strategic areas in the country makes IP services accessible to IP stakeholders in the regions. It is a strategy to harness the creativity and innovative skills of IP generators like SMEs, the academe, inventors, and artists, among others. A strong IP-­‐inspired culture of innovation and creativity brings forth business success, which in turn leads to countryside and national development, indicators that raise the barometer of the country’s global competitiveness. The Cagayan de Oro IP Satellite Office was launched in January 2011 at the DTI Region X Office headed by IPOPHL’s Director General Ricardo R. Blancaflor and DTI Regional Director Alicia V. Euseña. During said event, IPOPHL and the Philippine Chamber of Commerce and Industry (PCCI) Northern Mindanao Chapter signed a Memorandum of Understanding for the promotion of IPR among various business sectors. IPOPHL also signed a MOU with the Northern Mindanao Consortium for Industry and Energy Research and Development to promote the effective use of the IP system among its members and other members of the scientific community. A month after the launch of its 8th satellite office, IPOPHL opened yet another IPSO in Tuguegarao City, Cagayan Valley. The event was attended by representatives of the business sector, academe, inventors, RDIs, and DOST. DTI Regional Director Maria Esperanza Bañares and DOST Regional Director Dr. Urdujah Tejada graced the event. In April 2011, IPOPHL introduced its services to Tacloban City by opening its 10th IP Satellite Office in the Region XIII Office of DTI. The event was attended by DTI Regional Director Cynthia R. Nieras, DOST Regional Director Edgardo M. Esprancilla, and Regional Governor of PCCI Region XIII Mr. Virgilio Andrade. 922 trademark, 22 invention patent, 133 utility model, and 78 industrial design applications were filed through the IPSOs in 2011 totaling to 1,155 filings, an average of 50% increase from 2010. Further, 110 copyright applications were also filed through the IPSOs. IPOPHL has also conducted 34 Basic Orientation Seminars and 29 Patent Drafting Seminars in the provinces partnering with different organizations and government agencies. Lead the advocacy for legal and policy infrastructures to address emerging national and global demands of the IP system AMENDMENTS TO THE IRR OF INTER PARTES PROCEEDINGS IPOPHL promulgated the Amendments to the Rules and Regulations on Inter Partes Proceedings (Office Order No. 99. s. 2011), last 29 June 2011. The streamlined rules which took effect on 17 July 2011 following publication in a newspaper of general circulation, respond to the needs of the stakeholders and complement, among other things, the IPOPHL’s thrust in further speeding up the registration process of trademarks. Crafted with prior consultations with the stakeholders and the public, the amendments rationalized, simplified, streamlined and removed ambiguities in the Inter Partes Rules. Under the amended rules, there is no more filing of Unverified Oppositions and of “MNOs”. The opposer must file either a verified notice of opposition or a motion for extension to file an opposition. Even if what is filed is a motion for extension, there is already an Inter Partes case and the opposer shall be required to pay not only the fee for the motion but also the filing fees. The requirement to pay the filing fees even if what is filed is a motion for extension may deter the filing of frivolous motions for extension that only delays the trademark registration process. Currently, around 40% to 50% of “MNOs” do not proceed to the actual filing of opposition. Significantly, the BLA will be able to collect more revenues. Also, resolving cases purely on ground of technicalities is minimized. Under the amended rules, the parties shall have ample opportunity to comply with formal requirements and to present their case. With the changes, there is less and less cases decided on technicalities and more on IP and substantive law issues. The streamlined rules are also seen, in the long run, an opportunity to improve “turn-­‐
around-­‐time” in disposing cases, due to the following streamlining of process: •
Reduction in the period to file opposition from 120 days to 90 days •
•
•
Reduction in the period to file answer from 120 days to 90 days Reduction in the timelines on processes. No more filing of a reply and rejoinder. The Preliminary conference designed to expedite resolution of the case, e.g. order to submit position papers given in open court, thus, dispensing with a written order and service thereof, shortening the timelines in effect. No more motions for reconsideration, which only delays the process. Almost 99% of the motions are denied anyway to the detriment of the winning party. Adequate remedy to “correct erroneous decision, if any” is available through appeal to the Director General. In addition, the revised rules incorporated the rules on compulsory licensing under Rule 12 of DOH-­‐IPOPHL Administrative Order No. 2008-­‐01, which implements the provisions of Rep. Act No. 9502 (“QUAMA”). Supplemental guidelines were also issued by the Director of the BLA, particularly, BLA Circular No. 1, s. 2011 on transitional guidelines, and BLA Circular No. 2, s. 2011, on the conduct of preliminary conference. In the pipeline are guidelines on allowing posting of surety bonds in lieu of cash bonds in IPV cases, on streamlining hearings of cases, and on the Committee of Three for patent cancellation cases, among others. ACCESSION TO THE MADRID PROTOCOL The Madrid Protocol provides for a procedure that simplifies the protection of trademarks in multiple countries by allowing the trademark holder to file a single application, in one language, in one national IP Office, such as the IPOPHL. As of September 2011, the Madrid Protocol has eighty-­‐five members since its adoption in 1989, including the major trading partners of the Philippines. Accession to the Madrid Protocol is one of the initiatives that the IPOPHL has taken towards modernizing the Philippine Trademark System in order to provide trademark owners, especially Filipino brand owners, with a better intellectual property (IP) environment to ensure protection for their marks. Protection of trademarks is an important strategy for businesses worldwide, especially those that have expanded overseas or are seeking to penetrate foreign markets. Marks serve to distinguish the goods and services of business owners in their country and in their export markets. The IPOPHL held a series of consultations with various stakeholders, which culminated in March 2011. Trademark owners, IP practitioners, and government officials attended the consultations. In addition to holding stakeholders’ fora, the IPOPHL engaged business groups in dialogues concerning Madrid. The business associations, realizing the benefits of Madrid Protocol to the economy, have repeatedly expressed their support for Philippine accession to the Protocol as soon as possible. This recommendation for accession to the Madrid Protocol is but one of the IPOPHL’s responses to the clamor from the business sector for a highly efficient and transparent IP system in the country. Forum on the Philippines’ Accession to the Madrid Protocol COPYRIGHT BILL The House of Representatives has approved on the 3rd reading House Bill No. 3841 amending Republic Act 8293 or the Intellectual Property Code of the Philippines. Congressmen Juan Edgardo Angara, Joel Duavit, Albert Garcia, Rufus Rodriguez, and Irwin Tieng sponsored the bill in the House of Representatives while Senators Edgardo Angara, Jinggoy Estrada, Lito Lapid, Loren Legarda, Miriam Defensor-­‐Santiago, Antonio Trillanes, and Manuel Villar authored the bill in the Senate. The bill will create a Bureau of Copyright within the IPOPHL. The bureau will be responsible for regulating
collective management entities and agents in behalf of artists. Further, it will exempt non-­‐profit reproduction of copyrighted works for the use of visually-­‐impaired persons. Circumvention of technological measures or most commonly referred to as “jail breaking”, will be treated as an aggravating circumstance to the offense of copyright infringement. Senate Committee Hearing INTERNATIONAL RELATIONS Fresh from the successful passing of the historic patent reform act of the United States, the head of the United States Patent & Trademark Office (USPTO), Director David Kappos met with IPOPHL Director General Ricardo Blancaflor in Geneva on the occasion of the 49th General Assemblies of the World Intellectual Property Organization to sign an accord for USPTO and IPOPHL to commence mutually beneficial initiatives to realize the role of intellectual property in promoting innovation, technology transfer, and economic growth. The agreement is a comprehensive cooperation mechanism between the two countries to share information and best practices in intellectual property office administration, capacity building, patent and trademark examination, IP rights protection and enforcement. Cooperative undertakings include training and workshops for lawyers, prosecutors, enforcement officers and the judiciary, as well as benchmarking activities to share best practices in quality assurance, examination process and review guidelines for trademark and patent examiners. Based on the agreement, the offices will also promote access to patent information, diffusion of knowledge and technology transfer, especially between universities and government research centers from both countries. There is also a component on outreach and education for businesses, including small and medium-­‐sized enterprises (SMEs) on how to protect and enforce their intellectual assets in terms of patents, trade secrets, trademarks and copyrights in the Philippines and in the U.S. Aside from being a member of the ASEAN and working towards a harmonized intellectual property framework for the region as former chair of the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC), IPOPHL has actively pursued several bilateral collaborations with USPTO, European Patent Office (EPO), the WIPO and other intellectual property entities. The bilateral agreements have resulted in several enhancements in the intellectual property system of the country, including office modernization and automation that has shortened and simplified the registration processes of trademarks, designs and patents as well as increased accessibility of knowledge and disclosed scientific information for researchers and scientists in schools and universities. USPTO-­‐IPOPHL MOA Signing OTHER DEVELOPMENTS To streamline the litigation process and to expedite court procedures and reduce the backlog of IP cases, the IPOPHL advocated for the approval of the Special Rules on IP Litigation and the establishment of Special IP Courts. In a significant move enthusiastically welcomed by the IP community, the Supreme Court En Banc recently promulgated A.M. No. 10-­‐3-­‐10-­‐SC or the Rules of Procedure for Intellectual Property Rights Cases. The issuance of the Rules of Procedure providentially coincided with the celebration of the Philippine Intellectual Property Rights (IPR) Week and the opening of the 1st Philippine Anti-­‐
Counterfeiting and Piracy Summit. The Rules shall govern civil and criminal actions for violations of intellectual property rights lodged before the Regional Trial Courts designated by the Supreme Court as Special Commercial Courts. The salient features of the new IPR Rules include (1) the conferral of authority to the Special Commercial Courts in Quezon City, Manila, Makati and Pasig for issuance of search and seizure warrants enforceable nationwide; (2) the executory nature of any order issued by the courts under the Rules; (3) cases may be submitted for decision immediately after pre-­‐trial, or on the basis of position papers, or after clarificatory hearing, or after trial; (4) presumptions and evidentiary rules for patent, trademark infringement, unfair competition, and copyright cases; and most notably, (5) the issuance of an order of destruction of seized infringing goods any time after filing of a complaint or information, and the retention of representative samples in lieu of the actual items. As provided therein, the rules took effect fifteen (15) days after its publication in 24 October 2011. Develop and maintain a highly-­‐motivated, competent, and cohesive workforce committed to serve with professionalism, transparency, and integrity IPOPHL implemented an office-­‐wide Training Needs Analysis (TNA) at the start of year to determine the gaps in training and what capacity-­‐building programs should be prioritized. IPOPHL’s Human Resource Development Division (HRDD) gathered all the necessary data and information needed, and conducted Focus Group Discussions (FGDs) to verify these data. The result of this project will be implemented in 2012. ENHANCING IP LEGAL EDUCATION, KNOWLEDGE, AND PRACTICE MOA Signing between Ateneo de Manila Law School and the Intellectual Property Office of the Philippines (IPOPHL) Early this year, the IPOPHL and the Ateneo Law School signed a Memorandum of Agreement launching and implementing the Master of Laws in IP Program. The program seeks to maintain an international standard of relevant knowledge and skills pertinent to IP Law in the Philippines and to generate a steady stream of research and thesis output in IP. •
•
•
•
•
•
•
The first or pioneering batch of scholars consists of three lawyers in the Bureau of Legal Affairs. Director General Ricardo R. Blancaflor approved the subjects of their theses, particularly, the sports industry’s contribution to IP development, copyright in the entertainment industry and its role in the economic development, and benchmarking or measures to curb internet piracy/illegal downloading and contributory liability for access providers. The program, which under the agreement caters to both IPOPHL and non-­‐IPOPHL lawyers, will be improved and may be expanded next year. The IPOPHL also convenes the IP Legal Knowledge Management Group (“IPKLM”) through the “Legal Adobo Series”, a forum for IPOPHL lawyers and IP specialists to discuss and analyze current and emerging IP legal issues. The results of the discussions are considered resources and tools that may be utilized in crafting policies or proposed legislation, among other things. IPOPHL has conducted eight (8) sessions: •
Proposed amendments to the Copyright Law, 20 January 2011 Operating a G.I. System, 10 February 2011 The Madrid Protocol, 17 February 2011 IPOPHL’s Administrative Interpretations of Non-­‐Patentable Inventions, 24 March 2011 TK Digital Library, 14 April 2011 Patent Law and Examination, 02 June 2011 Plagiarism: A Case Study, 01 December 2011 IP Arbitration: Settlement of IP Disputes Through Arbitration, 01 December 2011 In partnership with the U.P. Law Center, IPOPHL held on July and August 2011 workshops on legal research and case analysis for IPOPHL lawyers. Participants were credited with full compliance units of the Mandatory Continuing Legal Education (“MCLE”) program of the legal profession. The second part of the workshop, on enhancing decision-­‐writing skills, was implemented in October 2011. To ensure the implementation and execution of decisions, writs and orders issued in relation to its quasi-­‐judicial functions, the IPOPHL reaches out to its partner government agencies, specifically the Philippine National Police (PNP) and the Bureau of Jail Management and Penology (BJMP). Operational procedures are crafted or updated to effectively implementing existing agreements in assisting the IPOPHL in enforcing and executing its decisions and orders, including orders to imprison persons declared in contempt for refusing or ignoring IPOPHL decisions and orders. Lawyers, researchers, litigants, and the general public could now find comfort that all decisions of the BLA are now available on line, updated and for free. The BLA decisions are accessible through the IPPHL website and in printable format. To be added to the database soon are the decisions of the Director General. A long-­‐
term plan is to include decisions of the regular courts on the IP cases. Making the decisions on IP cases publicly accessible fosters greater transparency and ideally, consistency. Finally, the BLA has also been tasked to render legal opinions and studies not only on IP subjects but also agency-­‐wide issues. CUSTOMER SERVICE MECHANISM As part of its Feedback Mechanism Program, IPOPHL conducted in March and November 2011 an assessment of its frontline services and its major product line processes. It also implemented in June 2011 the initial stage of a separate assessment of its Mediation Services through the conduct of a written survey followed through by a Focus Group Discussion (FGD) to verify the results of the written survey. The assessment aimed to establish a baseline with which to compare stakeholder’s satisfaction with IPOPHL’s services. Before the year ended, IPOPHL also conducted a Stakeholders’ Forum each for Patents and Trademarks. The Feedback Mechanism Program was established to enhance IPOPHL’s capability to respond to the needs of its stakeholders and clients. These also help IPOPHL generate assessment points and concrete decisions in enhancing its current processes and services to better serve the public. Provide a conducive work environment that supports professional growth and promotes work-­‐life balance THE INTELLECTUAL PROPERTY CENTER In an effort to provide a conducive work environment for its employees and a more modern and safe venue for its clients, IPOPHL moved to its new home in McKinley Hill at Fort Bonifacio, Taguig City on May 2011. The area is within reach of Ayala Avenue in Makati City, the metro’s major business district. McKinley Hill is dubbed to be the new business hub in Metro Manila with more companies transferring to the area as well as embassies and international schools. IPOPHL occupies four (4) of the 15 floors in the now called Intellectual Property Center. IPOPHL leased an off-­‐site storage area for its records to allot more space for its projects and operations. It has converted these records into digital form and is in the process of completing a project to enable digital exchange of files and records between its employees. Further, as part of the office’s compliance with Republic Act No. 9485 or the Anti-­‐Red Tape Act, the “no noon break” policy was implemented requiring all frontline service personnel to maintain a skeletal workforce during lunch break and set a shifting/rotating schedule for employees who will render frontline service. ENSURING THE WORK-­‐LIFE BALANCE Pursuant to Executive Order No. 641 which authorizes the establishment and administration of Provident Funds in the government and Budget Circular No. 2008-­‐3 which provides the rules, regulations, and procedural guidelines, the IPOPHL established the IPOPHL Provident Fund, which officially became operational in February 2011. The IPOPHL Provident Fund aims to provide supplemental benefits to IPOPHL employees upon retirement, separation from service, permanent and total disability, and/or death. It also aims to encourage the members to save and accumulate a portion of their earnings during employment so that the same shall be converted into definitely determinable benefits upon the separation from service. As part of its operations, the Fund will serve as an alternative source of loan financing for its members. IPOPHL started its fitness and wellness program with a Basketball Tournament held in February-­‐March 2011. All Bureaus/Offices were represented in this Tournament. This activity had the following objectives: • Provide sports and fitness programs that present an opportunity for officials and employees to utilize, display, and further develop their skills and abilities • Promote programs that seek to offer a chance for all officials and employees to more fully and meaningfully utilize and enjoy their recreational leisure time, and in so doing benefit them physically, emotionally, psychologically and socially • Encourage employees to participate in wellness programs that promote camaraderie, sportsmanship thru formative sports programs and competitions IPOPHL also launched the Workout@Work Program, which seeks to provide a venue for employees to live a healthier lifestyle and become much healthier individuals thru exercise such as dance aerobics, hip hop dancing, and ballroom dancing. IPOPHL also established a Gun Club to promote responsible gun ownership and provide a venue for gun owners in the office to enjoy their sport. In March 2011, the National Committee on Intellectual Property Rights (NCIPR) in coordination with IPOPHL, conducted a Seminar on Gun Safety and Training on Gun Marksmanship held at the Philippine Air Force Firing Range, Villamor Airbase in Pasay City, which was participated in by IPOPHL Gun Club members. A continuation of said activity was held in July 2011 with a total of 50 participants from IPOPHL, Philippine National Police (PNP), Department of Justice (DOJ), National Bureau of Investigation (NBI) and the Bureau of Customs (BOC). The IPOPHL Chorale was officially formalized in June 2011 after winning in the DTI Chorale Competition last December 2011. The mission of the IPOPHL Chorale is to present professional quality performances of chorale music works thru public performances, concerts, and competition and at the same time contribute to IPOPHL’s programs that nurture and elevate the cultural climate in IPOPHL, and increase the appreciation of the arts of IPOPHL personnel. The IPOPHL Chorale regularly performs during the Flag Raising Ceremony and First Friday Mass. The choir also performed recently at the IP Summit and had its 1st live TV appearance in TV5’s “Sapul sa Singko”. Currently, there are 20 choir members composed of employees from various bureaus in the Office. The Photography Club held a photo contest in celebration of the anniversary of the IP Code and to promote IPOPHL’s transfer to its new building in June 2011. The contest aimed to enhance the appreciation of employees, clients, and stakeholders of IPOPHL’s new home. In support of the “Anti-­‐Dengue” campaign of the national government, particularly the Department of Health (DOH), IPOPHL conducted a bloodletting drive in coordination with the Philippine Red Cross. IPOPHL employees as well as the walk-­‐in public participated in the event. Workout@Work Program IPOPHL Photo Contest Winners IPOPHL Chorale IP S
TATISTICS
(Note: All data are as of December 15, 2011) 1. RESIDENT AND NON-­‐RESIDENT FILINGS AND GRANTS/REGISTRATIONS Resident applications refer to those filed by an applicant, who is a resident of the Philippines, at the Intellectual Property Office of the Philippines. Non-­‐resident applications refer to those filed by applicants, who are not residents of the Philippines, at the Intellectual Property Office of the Philippines. A. TRADEMARK FILINGS YEAR 2005 2006 2007 2008 2009 2010 2011 NON-­‐RESIDENT 5,680 6,175 6,402 6,987 6,135 7,077 7,661 RESIDENT 7,048 8,317 8,676 8,870 8,874 9,734 10,265 NOT SPECIFIED 1 2 0 1 2 0 2 TOTAL 12,729 14,494 15,078 15,858 15,011 16,812 17,928 TOTAL 10,024 12,663 17,592 13,868 11,181 12,028 11,487 *Note: The change in data from those published in the past IPOPHL Annual Reports is due to the TM database updating project. B. TRADEMARK REGISTRATIONS YEAR 2005 2006 2007 2008 2009 2010 2011 NON-­‐RESIDENT 6,816 7,634 10,177 7,285 5,800 6,141 5,809 RESIDENT 3,208 5,027 7,414 6,582 5,380 5,887 5,678 NOT SPECIFIED 0 2 1 1 1 0 0 YEAR 2005 2006 2007 2008 2009 2010 2011 NON-­‐RESIDENT 2,762 3,038 3,248 3,097 2,825 3,224 2,851 RESIDENT 210 223 225 216 172 167 170 TOTAL 2,972 3,261 3,473 3,313 2,997 3,391 3,021 RESIDENT 4 TOTAL 1,642 *Note: The change in data from those published in the past IPOPHL Annual Reports is due to the database updating project. C. INVENTION PATENT FILINGS D. INVENTION PATENT GRANTS YEAR 2005 NON-­‐RESIDENT 1,638 2006 2007 2008 2009 2010 2011 1,191 1,785 797 1,657 1,140 1,047 E. UTILITY MODEL FILINGS YEAR 2005 2006 2007 2008 2009 2010 2011 NON-­‐RESIDENT 27 22 32 33 48 35 37 F. UTILITY MODEL REGISTRATIONS YEAR 2005 2006 2007 2008 2009 2010 2011 NON-­‐RESIDENT 14 18 58 52 51 49 63 G. INDUSTRIAL DESIGN FILINGS YEAR 2005 2006 2007 2008 2009 2010 2011 NON-­‐RESIDENT 619 486 434 581 320 415 540 5 2 41 22 13 4 1,196 1,787 838 1,679 1,153 1,051 RESIDENT 519 519 395 512 496 579 580 TOTAL 546 541 427 545 544 614 617 RESIDENT 296 282 715 405 317 326 322 TOTAL 310 300 773 457 368 375 385 RESIDENT 646 475 431 640 458 432 518 TOTAL 1,265 961 865 1,221 778 847 1,058 H. INDUSTRIAL DESIGN REGISTRATIONS YEAR 2005 2006 2007 2008 2009 2010 2011 NON-­‐RESIDENT 332 306 865 721 213 318 360 RESIDENT 426 293 468 493 309 324 297 TOTAL 758 599 1,333 1,214 522 642 657 2. CASES FILED AND DISPOSED A. INTER PARTES AND IP VIOLATION CASE FILINGS YEAR 2005 2006 2007 2008 2009 2010 2011 IPC 140 200 359 371 296 333 528 IPV 30 22 14 13 14 17 28 B. INTER PARTES AND IP VIOLATION CASE DISPOSALS YEAR 2005 2006 2007 2008 2009 2010 2011 IPC 145 284 295 303 299 137 222 IPV 19 25 26 13 14 5 21 3. TRADEMARK FILINGS BY REGION REGION I II III IV V VI VII VIII IX X XI XII XIII ARMM CAR NCR Not Specified 2005 17 7 119 205 3 39 171 23 3 10 52 18 2 1 7 4,890 1,481 2006 13 19 142 286 17 27 199 11 13 13 93 7 4 0 10 5,872 1,591 2007 14 9 160 277 19 49 201 15 9 11 76 27 8 0 7 6,224 1,570 2008 17 20 154 260 21 87 243 11 21 16 58 14 0 0 15 5,795 2,138 TOTAL 170 222 373 384 310 350 556 TOTAL 164 309 321 316 313 123 243 2009 10 12 162 195 17 65 210 2 10 17 115 19 6 3 17 4,753 3,261 2010 16 17 285 323 24 93 298 12 10 20 134 16 1 0 11 5,966 2,508 2011 22 15 279 342 21 77 354 5 7 15 156 15 9 1 21 6,518 2,116 4. TRADEMARK FILINGS THROUGH THE IP SATELLITE OFFICES REGION I II III IV V VI VII VIII IX X XI XII XIII ARMM CAR NCR Not Specified TOTAL 2008 0 0 2 0 0 2 7 0 0 0 3 0 0 0 0 4 24 42 2009 4 2 27 0 5 12 92 1 1 3 60 6 1 0 7 46 152 419 2010 3 8 52 4 12 8 117 3 0 2 70 9 1 0 7 54 185 535 2011 10 16 125 8 18 51 158 6 4 45 122 52 8 4 32 263 0 922 5. INVENTION, UTILITY MODEL, AND INDUSTRIAL DESIGN FILINGS THROUGH THE IP SATELLITE OFFICES REGION I II III IV V VI VII VIII IX X XI XII XIII ARMM CAR NCR TOTAL 2009 INV UM ID 0 3 0 0 0 0 0 0 5 0 0 0 0 3 3 9 9 1 1 5 4 0 2 0 0 0 0 0 3 6 10 10 1 0 13 0 4 3 1 0 0 0 1 0 0 1 12 3 26 63 24 2010 INV UM 0 19 1 4 1 2 3 0 1 3 1 28 4 19 0 0 1 1 1 4 3 5 4 2 0 5 0 7 9 31 6 24 35 154 ID 1 6 1 1 1 0 21 0 0 0 0 1 0 1 0 14 47 2011 INV UM 0 5 3 7 0 11 0 0 1 16 1 17 3 3 0 2 0 2 3 4 3 3 0 2 0 6 0 0 6 43 2 12 22 133 ID 0 1 32 0 0 3 7 0 2 1 3 0 0 0 57 2 78 E
IPOPHIL VENTS &
ACTIVITIES
1ST PHILIPPINE ANTI-­‐COUNTERFEITING AND PIRACY SUMMIT MADRID PROTOCOL-­‐THE WAY FORWARD FOR THE PHILIPPINES: A FORUM FOR STAKEHOLDERS INNOVATION & TECHNOLOGY SATELLITE OFFICE ACTIVITIES INTELLECTUAL PROPERTY SATELLITE OFFICE ACTIVITIES IP AWARENESS ACTIVITIES “Innovation” and “creativity” pervade the design of the new IPOPHL logo. At the core of the logo is a unique graphic element which is actually a stylized rendition of “Una” written in our own writing system – the Baybayin. This appears in the center of the letter “O” in the acronym “IPOPHL”, but “O” is inspired from the light bulb, the universal symbol for new ideas. This makes the design a combination of Filipino culture and universal elements that could best represent the main thrust of IPOPHL. Only Filipinos can rightfully claim to the use of Baybayin as part of the Filipinos’ heritage and culture, yet Filipino creations appeal to a world audience. The Baybayin letter is part of the pre-­‐Hispanic writing system used by Filipinos from the 16th to the 19th century. The character used in the logo symbolizes “Una” meaning FIRST. “UNA” reflects a cross-­‐cutting principle in the intellectual property system because generally, “first in time results in seniority of rights” whether in invention patents, utility model registration, industrial design registration, trademark registration, or copyright and other related rights. “Una” also speaks eloquently of the mantra of IPOPHL to be “first among equals” in government service and to trail blaze new systems, structures, and organizations to realize its goals of a demystified, democratized, and development-­‐oriented IP system for the country. The prism landscape of the bulb-­‐like letter “O” not only provides depth and texture to the logo but it symbolizes that intellectual property creations have various facets and usage. IP evolves from birth or creation to protection to utilization or commercialization and to enforcement of rights; IP can be many things to different people – to scientists, artists, lawyers, businessmen, or consumers of products and services. IP transcends local and international, cultural or traditional to modern and futuristic. Thus, the work of IPOPHL is dictated by these facets, and IPOPHL does it with the excitement and transparency of the prism lights. The preference for the color orange is inspired by the fact that it is a color generally associated with inherent creativity and is also considered to exude warmth and energy.